A trademark is a form of protected intellectual property and is considered a valuable intangible business asset. Acquiring a trademark can instill greater confidence in your business among partners and investors, facilitating collaborations and enhancing opportunities for equity raising to further develop your business. A trademark not only safeguards your creations but also maximizes their value, as it allows you to license or sell the rights to a franchisee or other entities.
What is a trademark?
A trademark is a sign or mark that you can use to identify and distinguish your company’s goods or services from those of other companies. By registering your trademark, you can prevent others from using its name or logo. Once registered, a trademark is protected indefinitely, provided you renew it every 10 years.
What law or regulations apply?
The Trade Marks Act, Trade Marks Rules, Trade Marks (International Registration) Rules, and Trade Marks (Border Enforcement Measures) Rules govern the registration, licensing, rights, renewal, and enforcement of trademarks in Singapore. While registration is not mandatory, having an unregistered mark may limit your ability to protect it under common law principles such as “passing off.” Opting for registration grants you a statutory monopoly on your mark, providing legal protection against imitation and infringement.
Singapore adheres to the international classification of goods and services under the Nice Agreement, categorizing trademark registrations into 34 classes of goods and 11 classes of services. The following can be registered as a trademark, provided the mark is distinctive and your goods or services can be distinguished from those of other companies:
- Letters
- Words
- Names
- Signatures
- Labels
- Devices
- Tickets
- Shapes
- Colors
Conversely, the following marks cannot be registered as trademarks:
- Descriptive marks (e.g., “super,” “best,” “cheap,” “one dozen”)
- Marks that are common to your trade (i.e., marks that have become well accepted in relation to your trade and do not distinguish your goods or services)
- Marks that could offend people or promote immoral behavior
- Deceptive marks (i.e., marks that misrepresent the nature, quality, or geographical origin of your goods or services)
- Marks identical to earlier marks
- Marks that could cause confusion (i.e., similar or identical to an earlier mark that relates to a similar or identical good or service provided by the owner of the earlier mark)
- Marks similar or identical to a Well-Known Mark
Upon successful registration, you are permitted to use the ® symbol next to your mark. The ™ symbol denotes that the mark is being used as a trademark but does not indicate that the trademark is registered or protected under trademark law.
Note: The trademark application process differs depending on where you are registering your trademark, i.e., in Singapore or outside Singapore.
Applying to register a trademark in Singapore
While you are not required to file your trademark application through an agent, you may wish to appoint one to act on your behalf. Since every company has different needs and the trademark process can be complex and lengthy, consulting with an attorney about the scope of your rights is advisable.
Before You Apply
Determine the classification of your goods or services. You are required to state the exact class number and appropriate specification according to the Nice Classification (NCL). You can use the International Classification of Goods and Services Autochecker tool to search for and classify your goods or services.
When to Register
There is no time limit for registering your trademark; you may have been using your logo in conjunction with the ™ symbol (or even without the symbol) for some time. One benefit of registering your trademark is that you can only file an infringement suit on a registered trademark. The effective registration date for your trademark is the date you file your application. Singapore has a priority claim procedure for applicants who have filed an earlier claim for the same mark in a Paris Convention country or a World Trade Organization member country (other than Singapore).
You are permitted to file for several classes of goods or services within the same application. To obtain an official filing date, your application must include all of the following:
- A statement requesting registration
- Your name and address
- A clear graphical representation of your mark. For a mark that contains a three-dimensional shape of the goods or packaging, line drawings should clearly show all dimensions of the mark
- A list of goods and services you are registering in relation to the mark with their classification according to the International Classification of Goods and Services
- A declaration of your proposed use of the trademark
- Appropriate payment of all fees
Processing Time
Your application will generally be reviewed in about four months, and you will be notified in writing if your application is in order for acceptance and publication or if there are any objections affecting your application.
If your application is refused, you must be represented by a local attorney and provide a local Singapore address for service.
Trademark protection term and renewal
If your trademark application is successful, your trademark will be valid and protected for 10 years from the initial filing date. Your trademark can, however, be protected indefinitely, so long as you pay the appropriate renewal fee at the end of each 10-year period.
International trademark protection
For international trademark protection, you can either file an application in each country in which you wish to have your trademark protected or register your trademark internationally through the Madrid Protocol. The Madrid System allows you to file one application in a single office (in Switzerland) in one language with one fee (in Swiss Francs) to protect your trademark in up to 95 member countries.
If you decide to file your application internationally, you must first register or file an application in your “home” office, in this case, Singapore. You must be a resident or national of Singapore (or have a real and effective industrial or commercial establishment in Singapore) to use the Madrid Protocol to register your trademark across multiple countries. Then you will need to submit your international application with the International Bureau of the World Intellectual Property Organization (WIPO). Details of your application in the Madrid System will be sent to the IP offices in each country you wish to have your trademark protected. The countries in which you seek to register your trademark must be Madrid Protocol member countries. Each country will make a decision in accordance with their legislation (in Singapore, this process will be very similar to the application process explained above) and record their decision with WIPO.
The international registration of your trademark is valid for 10 years and can be renewed at the end of each 10-year period directly through WIPO.
What are the risks of noncompliance?
If you discover that your trademark has been used without your consent, you may exercise your rights under the Trade Marks Act. In an action for infringement of a registered trademark by the proprietor of the trademark, the court may grant the following types of relief:
- An injunction
- Monetary damages
- An account of profits
- In cases involving counterfeit trademarks, the imposition of statutory damages
In certain circumstances, the court can also order the erasure, disposal, or delivery up of the infringing goods.
Sources:
- International Telecommunication Union (ITU): Individuals using the Internet (% of population) – Singapore
- World Bank: Individuals using the Internet (% of population) in Singapore
- Digital 2023: Singapore Report: Digital 2023: Singapore
- Intellectual Property Office of Singapore (IPOS): IPOS Statistics
- World Intellectual Property Organization (WIPO): Madrid Protocol